May

IPR SPOTLIGHT

May 2008

IPR SPOTLIG

HT





INSIDE THIS ISSUE:





FICCI EVENTS





IP NEWS





PATENTS







TRADE MARKS





GEOGRAPHICAL

INDICATIONS





COPYRIGHT



Editorial Board

Akash Taneja

(Executive Director)

Ph.- 32404277

akash.taneja@ficci.com

Sheetal Chopra

(Senior Assistant Director)

Ph.- 23766930

sheetal.chopra@ficci.com

Gouri Thounoujam,

Assistant Director

Ph.- 23357389

gouri@ficci.com

INDEX

Page no.

1 FICCI Events .............................................................................................................................................1-5

- FICCI-DIPP Consultative Working Group

- World Intellectual Property Day Seminar

- Japanese Patent System – Issues of Concern to Indian Industry

- Knowledge and Education Centers at Patent Offices

- Optical Disc Law

- Major Initiatives by FICCI-IPR Division

- Landmark Developments on IP in India





2. IP NEWS ..................................................................................................................................................6-12

2.1 PATENTS .............................................................................................................................................6-8

- Mechanism to Link Generic Drug Approval with Patents Proposed

- Indian Patent Law – Issues of Concern to Biotech Industry

- Some Facts on the Extent of Patenting in Foreign Countries

- Patenting of Microorganisms in India - article by Suresh Sukheja





2.2 TRADE MARKS .................................................................................................................................10

- Adidas Wins $305 Million Against Payless Shoesource Inc. for Trademark Infringement

- Ownership of 'Sensex' Lands In Court





2.3 GEOGRAPHICAL INDICATIONS ..................................................................................................11

- Mysore Mallige Registered as Geographical Indication

- India and Pakistan Battle over Geographical Indications (GI) Registration of Kashmiri Handicrafts





2.4 COPYRIGHT ......................................................................................................................................12

- Us Orphan Works Bill Catches Global Attention

FICCI EVENTS



FICCI-DIPP CONSULTA- 4. The records of granted patents (old cords, e-filing facility for filing patent

TIVE WORKING GROUP – records) have also been made avail- applications etc.)

able online.

AN UPDATE WORLD INTELLECTUAL

5. The work of digitizing all patent re-

The Consultative Working Group on Pat- DAY SEMINAR ON “HAR-

cords is in process. The online ac-

ents/Designs/Trade Marks system in In-

cess of digitized records will be NESSING IP FOR NATION

dia, constituted by FICCI, is actively en-

gaged in highlighting concerns of Indian

made available by January 2009. DEVELOPMENT”

Industry related to Intellectual Property 6. E-filing of Patent and Trade Mark ap- FICCI and Department of Industrial Pol-

to the Government. Department of In- plications have been made more icy and Promotion (DIPP), Government

dustrial Policy and Promotion (DIPP), user friendly by increasing number of India jointly organized a Seminar on

Government of India, on its side has of payment gateways and certifying “Harnessing Intellectual Property for

been constantly providing its support to authorities for digital signatures. Nation Development”, on the occasion

FICCI and has been considering issues FICCI has also made several other rec- of World IP Day, 26th April 2008. The

raised by us leading to timely results. ommendations to DIPP including World IP Day is held with an objective to

incentivizing users for filing patent appli- raise awareness about Intellectual Prop-

As a result of deliberations of Consulta-

cations electronically by reducing exist- erty protection; to increase understand-

tive Working Group following tasks

have been successfully completed:

1. A separate wing has been estab-

lished in Mumbai Patent Office,

which is solely responsible for data

analysis (such as records on techni-

cal fields by year of filings, maxi-

mum no. of patents granted to a

company in each sector, top 20 com-

panies filing patents, total no. of pat-

ents granted in each year, resident

filings, non-resident filings, pend-

ing applications by office, patents

in force by country etc) and con-

verting it in statistical format. This

will help in judging the patenting

trends in each sector. ing filing fee, keeping the patent office li- ing of how protecting IP rights helps pro-

brary opened on Saturdays also, expedit- mote creativity and innovation; to cele-

2. Patent Office has put the abstracts

ing transactions of patent records across brate creativity & contribution made by

of patent applications, published af-

patent offices and from patent offices to creators and innovators to the develop-

ter 18 months, online. This could

the party who has requested for patent in- ment of societies across the globe and to

eliminate the herculean and time

formation and similar other issues. encourage respect for the IP rights of oth-

consuming task of searching the de-

ers.

sired information through Patent Of- We request our readers to kindly let us

fice Journals, which are published know their concerns related to Pat- The Seminar aimed to make the world

in PDF format. ents/Designs/Trade Marks. We would community aware about India's commit-

also like to know your perception of the ment towards protection of Intellectual

3. Patent Office has made the deci-

user friendliness of information which Property and to project India as an inter-

sions of Controller's available on-

has been made available online (such national destination for manufacturers,

line enabling anyone to check legal

as controller's decision, keyword innovators, contract research organiza-

status of the patent application.

searches, availability of patent re- tions, researchers etc. The Seminar in-



1

cluded sessions on Intellectual Property think tank for the Government on impor- agreement. He stated that FICCI-IPR di-

and Economic Development chaired by tant IP policy matters, signing bilateral vision has been working closely with De-

Mr. Ajay Shankar, Secretary, DIPP; De- MoUs with foreign patent offices which partment of Industrial Policy and Promo-

veloping an Innovation culture chaired contains affirmations to strengthen na- tion (DIPP) and Indian Patent Office for

by Dr. Samir K Brahmachari, Secretary, tional patent offices etc. The Minister an- raising awareness on IP issues in the in-

DSIR & Director General, CSIR; En- nounced the launch of FICCI's National dustry and other stakeholders and would

forcement of IP Rights chaired by Mr. IPR Campaign under which FICCI and intensify its activities for capacity build-

Praveen Anand, Managing Partner, DIPP will jointly conduct public aware- ing of enforcement agencies specially in

Anand and Anand and on Indian IP Sys- ness on IPR issues and facilitate capacity the Police and the Customs Departments

tem – Towards Achieving Global Stan- building for industry, enforcement agen- as well as in sensitizing the judiciary for

dards, chaired by Mr. N N Prasad, Joint cies and the office of Controller General speedy disposal of IP cases.

Mr. Ajay Shankar, Secretary, Depart-

ment of Industrial Policy and Promotion

(DIPP), in his address, highlighted the

concerns about rapid growth in the men-

ace of counterfeiting and piracy of Intel-

lectual Property which discourages inno-

vation causes health and safety risks and

creates a significant drain on the global

economy. He mentioned that DIPP is ac-

tively engaging with Chambers of Com-

merce, Industry associations and other

stakeholders to handle the important is-

sue of strengthening the enforcement of

Intellectual Property Rights in India.

Mr. N N Prasad, Joint Secretary, DIPP,

Secretary, DIPP. The other eminent of Patents, Designs and Trade Marks

while giving vote of thanks, stated that

speakers included distinguished attor- (CGPDTM). The campaign would in-

Government recognizes the critical im-

neys, industry professionals, senior gov- clude seminars, workshops and special-

portance of IP systems for the business

ernment officers, scientists and repre- ized training programmes, which would

community and mentioned that FICCI

sentatives of international organizations. be conducted over a period of one year

and DIPP have set up a Consultative

Dr. Ashwani Kumar, Minister of State from April '08 to March '09.

Working Group consisting of representa-

for Industry inaugurated the Seminar. Dr. Amit Mitra, Secretary General, tives from industry, legal experts and the

He highlighted the initiatives taken by FICCI giving the welcome address said office of Controller General of Patents,

the Government in strengthening the IP that in today's knowledge based era of Trade Marks and Designs to enable users

regime in India which includes creation globalized economies it is important that of the IP system to suggest improve-

of State-of-the-art infrastructure; total IT the world community is fully aware of In- ments in the working of the IP office.

enabled IP offices; introduction of e- dia's commitment to be an international

The World IP Day Seminar was spon-

filing facility, augmentation of human re- destination for investments by manufac-

sored by Microsoft India and Business

source and launch of public aware- turers, innovators, contract research orga-

Software Alliance (BSA).

ness/sensitisation programmes; status of nizations. He mentioned that India has

ISA and IPEA granted to Indian Patent taken several initiatives to curb the coun- The Business Software Alliance

Office by WIPO, establishment of Na- terfeiting and piracy menace and all ef- (www.bsa.org) is the foremost organiza-

tional Institute of Patent Management forts have been made by the Government tion dedicated to promoting a safe and le-

(NIIPM) which will provide training, ed- to strengthen the Intellectual Property Re- gal digital world. BSA is the voice of the

ucation and research in IP and would be a gime in conformity with the TRIPS world's commercial software industry



2

and its hardware partners before govern- prior art searching, by inventors / com- ent/patent application which increases

ments and in the international market- petitor / researchers and other stake- the cost exponentially. In order to save

place. Its members represent one of the holders, incomplete because the abstract cost, most of the times companies decide

fastest growing industries in the world. does not sufficiently detail about the en- not to pursue the project which is antici-

BSA programs foster technology inno- tire contents of the invention claimed. pated to be covered in the Japanese pat-

vation through education and policy ini- ent document.

2. Filing in Japanese language

tiatives that promote copyright protec-

The Japanese Patent office does not al- We would be happy to receive com-

tion, cyber security, trade and e-

low filing of patent application in Eng- ments of our readers and also informa-

commerce. BSA members include

lish. tion on other issues which have not

Adobe, Agilent Technologies, Altium,

been covered above.

Apple, Autodesk, Avid, Bentley Sys- This increases overall cost of procuring

tems, Borland, CA, Cadence Design Sys- patents in Japan as the applicant has to KNOWLEDGE AND EDUCA-

tems, Cisco Systems, CNC Soft- incur huge amount of translation cost. TION CENTRE'S AT PAT-

ware/Mastercam, Corel, Dell, EMC,

3. Language of Office Actions ENT OFFICES

Frontline PCB Solutions - An Orbotech

Valor Company, HP, IBM, Intel, INUS The office actions are generated in Japa- FICCI-IPR Division has proposed to cre-

Technology, McAfee, Microsoft, nese language only. As a result the appli- ate Information and Education Cen-

Mindjet, Minitab, Monotype Imaging, cant has to get entire office action trans- tres at all Patent Offices which would fa-

PTC, Quark, Quest Software, SAP, lated in English. Alternatively, appli- cilitate in making the general public, in-

Siemens PLM Software, SolidWorks, cants hire Japanese attorney which cluding students, aware of the role of In-

SPSS, Sybase, Symantec, Synopsys, proves to be very expensive. tellectual Property in today's knowledge

Tekla, The MathWorks and Trend Micro. 4. English translation of entire patent based economies and to showcase the

To report software piracy please call specification is not available transparency in the working of patent of-

1800 11 00 33 toll free or log on to fices. Shri N N Prasad, Joint Secretary,

In most of the cases the English transla- DIPP has welcomed the suggestion and

www.bsa.org.

tion of entire patent specification is not agreed that FICCI and DIPP could work

JAPANESE PATENT available. This requires information jointly towards creation of such Centres

SYSTEM – ISSUES OF seeker to get the patent document trans- which shall have an exhibition area

lated into English to find out the scope of where working models of inventions

CONCERN TO INDIAN

the invention, which is covered in the pat- which have been granted a patent by that

INDUSTRY

FICCI-IPR Division has forwarded to

the Government, the issues of concern to

Indian Industry pertaining to prosecu-

tion of patent applications at Japanese

Patent office. The comments along with

FICCI suggestions are:

1. Searching

Searching options provided are not ex-

haustive. The searcher can only make

keyword searches on “applicant”, “title

of invention” and “Abstract”. Since the

patent applications are not in English

language therefore it allows keyword

searching confined to bibliographic

data and abstract only. This makes the



3

office and photographs of famous inven- cases. Losses met by the Government MAJOR INITIATIVES BY

tors etc. will be displayed. The Centre strongly advocates for the creation of FICCI-IPR DIVISION

will also contain IP literature which mechanism which could bring down the

Ø Division has held sev-

FICCI-IPR

could be made available in hard copy and menace of piracy and counterfeiting.

eral IP awareness programmes

electronic format. Public libraries of With an aim to develop an effective en- across the country.

each patent office could also kept open forcement policy to deal with OD piracy Ø building programmes

Capacity

on Saturdays in addition to other working Ministry of I&B directed FICCI to draft a have been organized by FICCI for

days. model Optical disc law. FICCI opines Custom officers in Kolkata,

OPTICAL DISC LAW that the draft OD law will enable the Chennai and Mumbai on protection

Govt. in regulating the business of OD of IPRs. A notification 49/2007 has

been subsequently issued by Cen-

tral Board of Customs and Excise to

prohibit the imports of goods that in-

fringe a range of Intellectual Prop-

erty Rights related to copyrights,

trade marks, patents, designs and

geographical indications.

Ø Round Tables for High

Judges

Court and District Court judges

across Karnataka, Bhopal and

Kolkata have been conducted for

sensitizing judiciary on speedy ad-

Intellectual Property Rights conferred manufacture and would thus help in curb- judication of IP related cases while

upon the IP right holder will be of little im- ing the menace of counterfeiting and pi- ensuring quality of justice.

portance if these are not enforced effec- racy. Ø

A Consultative Working Group has

tively. Counterfeiting and piracy of intel- The main purpose of OD law is to “facili- been constituted for providing a

lectual property is growing rapidly and, tate in tracking the origin of CD's con- platform for continuous interac-

collectively, the wider economic, social taining pirated content by regulating the tions between Industry and Patent

and developmental costs are much more manufacture and distribution of optical office. It has been constituted with

damaging than may be currently under- discs (blank and pre-recorded). Every an aim to bring the working of In-

stood. A disorder of this magnitude not manufacturer of Optical Disc is required dian Patent Offices at par with In-

only discourages innovation and also cre- to place identification code on OD. It fur- ternational Standards and to make

ates a significant drain on the global econ- ther requires the registrants to carry out patent offices more responsive to in-

omy – undermining economic develop- due diligence for IP ownership before dustry needs.

ment, a sound market economy system putting the contents on CD so as to com- Ø Division has submitted

FICCI-IPR

and open international trade and invest- bat the problem of piracy at the manufac- inputs to Government for making

ment. In India alone the music industry turing stage”. enforcement of IP Rights more ef-

loses about Rs. 600 crores per year while fective which include setting up of

the cumulative losses to the film industry The entire content industry especially

specialized courts or summary trial

have been to the tune of Rs. 2000 crores. software, films, music and gaming, in

procedures for handling counterfeit

It is estimated that there are more than 25 which India has great strength, is eagerly

and piracy cases; exemplary pun-

CD plants in the country which is far awaiting for the timely implementation

ishment and punitive damages

more than the demand for legitimate of this legislation. The enactment of this

which may act as deterrent against

CD's. U.S. continues to put us under the legislation will send a strong message to

potential infringers and declaring

watch list for IPR violations with one of the world community on India's commit-

offences of counterfeit and piracy

the points being inadequate measures ment to curb piracy and counterfeiting by

as cognizable and non-bailable.

taken on fighting counterfeit and piracy stepping up fights against IPR infringers.



4

Landmark Developments on IP vide IPR related information to the prosecuting patent applications at In-

in India industry, especially the small and dian Patent Office (IPO).

medium scale units. The ministry

Ø Patent office has been

Indian Ø one lakh trademarks have

A total of

has also promised a grant of Rs

granted the status of International been registered in the year April

1crore each year from next finan-

Search Authority (ISA) and Inter- 2006-March 2007. This is a huge

cial year for the working of the

national Preliminary Examination jump from eight thousand trade-

Cell.

Authority (IPEA) by WIPO. marks issued during April 1999-

Ø Cabinet has approved a

The Union March 2000.

Ø

The Indian Patent Office has

National Design Policy that seeks

granted a record number of 15,262 Ø of applications for regis-

The filing

to make Designed in India' a by-

patents during the financial year tration of designs has increased

word for quality and utility. This

2007-08. This is more than double from nearly three thousand in April

would ensure Global positioning

the number of patents granted 1999-March 2000 to nearly five

and branding of Indian designs.

(7539) during the previous year thousand in year April 2006-March

and almost eight times the number Ø

Indian Patent Office has initiated 2007.

of patents granted just three years E-filing of Patent and Trademark

Ø

The Geographical Indications Reg-

ago in 2004-05 (1911). The num-

ber of patents granted during 2007-

08, the first year of the 11th Five

Year Plan (FYP) compares well

with the total number of patents

granted during the entire 10th Five

Year Plan period which was 17,618

only. The patent filings also

crossed the 35, 000 mark during istry (GIR) has registered about 28

applications w.e.f. July 2007. The

2007-08. Geographical Indications. The lat-

Patent office has increased the num-

Ø

Government has spent Rs. 149 ber of payment gateways and certi- est in the series are 'Mysore Mallige'

crore on the first phase of modern- fying authorities for digital signa- – a variety of jasmine unique to

ization of the patent and other intel- tures for e-filing of patent applica- Karnataka; two unique rice varieties

lectual property offices and has ap- tions to make the system more user in the district, 'Palakkadan matta'

proved Rs. 300 crore for second friendly. Filing of applications elec- and the medicinal 'Navara rice'. The

phase of modernization. tronically (e-filing gateway) pro- prominent GIs already registered in-

vides inherent benefits to the appli- c l u d e D a r j e e l i n g Te a ,

Ø Institute of Intellectual

A National

cant in terms of not visiting the pat- Kancheepuram silk, Chanderi

Property Management (NIIPM) un-

ent office which thus saves time, hu- Saree, Mysore silk and Kullu

der the Ministry of Commerce & In-

man resource and money. Shawl.

dustry has been set up at Nagpur.

The institute will provide training, Ø Manual of Patent Practice

The draft Ø

The Government of India has en-

education and research in IP, be- and Procedures (MPPP) has been re- tered into Memorandum of Under-

sides being a think tank of the gov- vised by the Patent office and is standings with patent offices of US,

ernment on important IP policy a v a i l a b l e a t Europe, Japan, United Kingdom,

matters. http://ipindia.nic.in/ipr/patent/man Germany, France and Switzerland

ual.htm. MPPP provides guidance with a view to strengthen the Indian

Ø Chemicals Ministry has

The Union

t o p a t e n t e x a m i n- Patent offices, train Indian patent ex-

allocated Rs 20 lakh to the Pharma-

ers/agents/attorneys/applicants in aminers, carry out joint studies on IP

ceutical Export Promotion Council

understanding rules and regula- issues etc.

of India (Pharmexcil) for setting up

tions which must be followed while

an IPR Cell in Hyderabad to pro-



5

IP NEWS



PATENTS asking to create a mechanism which healthcare, agriculture, industrial and

could link the approval of generic drugs environmental biotechnology products

MECHANISM TO LINK with patents thus restraining the market- and services.

GENERIC DRUG ing of generic versions until the patent According to Business Standard, 21st

APPROVAL WITH PATENTS expires or is held to be invalid which Feb. 2008, the biotech firms have argued

PROPOSED would thereby ensure that the IP rights that the Indian laws are not clear on

are adequately respected. On the other whether biomolecules like nucleic acids

As per the current practice the patents

hand, the public interest group and the and polypeptides are eligible for patents

are granted by the Indian Patent Office

Generic industries are opposing such in India. Further they added that they are

and the marketing approval for the

views highlighting that such a mecha- worried about specific clauses in the

medicinal products (whether or not

nism would delay the entry of generic Indian Patent Act that disallows patents

protected under patents) is given by the

drugs and would therefore deprive for known products unless they result in

Drug Controller General of India

patients from essential drugs which are significant enhancement of the known

otherwise sold at unaffordable prices by efficacy.

innovators.

The biotech firms have pointed out that

Even if the proposal to link drug approval due to the lack of data protection in India

with patents is accepted but still such a the growth of MNCs and the clinical

mechanism might prove to be sheer R&D in India will be restricted.

failure as currently there is no complete

The biotech firms have highlighted that

database available which contains entire

Indian Patent Act require applicants to

legal status of the patent record enabling

disclose geographical origin and the

(DCGI). DCGI to evaluate whether the generic

source of biological materials used for

Unlike in US, the marketing approval drug is already protected under patent.

invention, which is the subject of a patent

granted by DCGI to the generic manu- Business Standard, 5th May 2008 reports application, which imposes unreasonable

facturer who wishes to market the that DCGI has recently asked the burden on patent applicants, subjecting

cheaper version of innovator's product industry for the details of patents granted valuable patent rights to uncertainty. As

does not amount to patent infringement. for their new medicines. Its intention was per the special rules of disclosure, each

The generic manufacturer can launch the to pass on the patent details to the patent patent applicant is responsible for tracing

drug in Indian market at his own risk of office for an opinion whenever second the “history” of all naturally-derived

getting sued by the patent holder upon applicant applies for marketing approval biological materials contributing to the

marketing. Recently, Cipla was granted for the similar product. invention. The task of identifying source

the license to market the anti-cancer Before undertaking proposal of linking of biological material becomes

drug Tarceva on which Roche had a regulatory approval with patents the extremely difficult if the applicant has

patent. Immediately, after Cipla policy makers must bear in mind that any obtained the material from a commercial

launched the drug in market it was sued step taken should not undermine access supplier or has obtained material from

by Roche for patent infringement. The to medicines and prejudice public health. secondary sources, many of who are

case is currently pending in the High selling the product over decades. Under

INDIAN PATENT LAW –

Court. As an interim relief Roche filed a the Indian Patent Act, the non-disclosure

petition for restraining Cipla to sell

ISSUES OF CONCERN TO of source of biological material is a

generic version. The court, dismissing BIOTECH INDUSTRY ground for opposing or revoking the

the injunction filed by Roche, decided The Biotechnology Industry Association patent which thereby poses unacceptable

not to injunct Cipla till the final court's (BIA) has expressed concern over the risk for patent applicants and undermine

order which is based on the reasoning of patent criteria norms prescribed under the incentives of the patent system to

the fact that Roche's drug is sold at the Indian Patent Act. promote innovation in biotechnological

exorbitant price. BIA, represents more than 1,100 inventions.

This High Court order has given birth to biotechnology companies and other Currently, discussions are going on at

new political issue wherein the innova- academic institutions in the US and 31 WTO on whether if appropriate changes

tor's industry organizations are now other countries. They also deal with the should be made in national laws making

6

disclosure of biological resources period, patenting activity was applications fo nanotechnology

mandatory so as to comply with concentrated in four countries the patents, filed under the PCT,

Convention for Biological Diversity. United States of America, Germany, increased steadily from the mid-

United Kingdom and France. 1980s to the mid-1990s and have

SOME FACTS ON THE

l the number of patent filings

Based on risen strongly over the past decade;

EXTENT OF PATENTING IN at 24.2%, the annual growth rate in

in 2005 the top 20 patent offices are

FOREIGN COUNTRIES nanotechnology surpasses that of

listed below

The WIPO Patent Report indicates that the overall PCT applications

l activity in the area of

Patenting

some 600,000 patents were granted in (12%) for the period 1995-

Nanotechnology

2005. The largest number of patents was 2004.

nt i v e a c t i v i t i e s i n

Inven

granted by the US Patent office, l the United States had the

In 2004,

nanotechnology have been

followed by the Patent offices of Japan, highest share of nanotechnology

gathering momentum since the end

the Republic of Korea, China and the patents filed under the PCT

of the 1990s. International

EPO. These five offices account for 74 (40.3%), followed by the European

percent of patents granted worldwide in

2005. The residents of Japan obtain the

largest number of the patents granted

worldwide, followed by residents of the

USA, ROK, Germany and France.

Following facts have been extracted

from WIPO Patent Report 2007 and

Compendium of Patent Statistics 2007

l number of patent applica-

The total

tions filed around the world has

increased steadily, particularly since

1995. There has been a continuous

increase in the number of filings by

patent applicants in their country of

residence, but most of the increase in

total patent filings is accounted for by

non-resident patent filings

l

The distribution of patent filings

worldwide is very uneven. A small

number of countries account for the

majority of patent filings both by

residents and non-residents. The

Patent offices of Japan and United

States of America receive the largest

amount of patent applications

followed by North East Asian

emerging States, namely China and

the Republic of Korea and large

industrialized European States.

l

Until 1960, growth in worldwide

patent activities was very modest

with an average annual growth rate of

1.99% from 1883 to 1959. During this





7

Union (26.4%), Japan (19%) and compared to +13% between 1995- Japan, Spain and the United States

Germany (10%). From 2002 to 2000). The surge in the late 1990s had more patents in biotechnology

2004, an average of 0.9% of total was partly due to the flow of patent than in other technical fields.

PCT filings related to applications concerning the · l to 2004, biotechnology

From 2002

nanotechnology. Shares in total

nanotechnology patents are larger

than shares in total PCT filings in

Ireland, Japan, Poland, Singapore

and the United States (Figure

3.2.1).

n

Most countries report a significant

increase in the shares of

nanotechnology in total national

patenting in the mid-2000s (Figure

3.2.2) as compared to the late

1990s, although activity remains

relatively limited (0.8% on

average).

· l

Nanotechnology patent applica-

tions are further categorized into

six fields of application by the

OECD, e.g.“Electronics”,

“Optoelectronics”, “Medicine and

biotechnology”, “Measurements

and manufacturing”, “Environ- human genome, while the represented 6.5% of total PCT

ment and energy”, and “Nano reduction in the 2000s is often filings, compared to 8.6% in the

materials”, based on the Interna- explained by patent offices' more late 1990s (Figure 3.3.3). This

tional Patent Classification. stringent criteria for granting share reached more than 12% of all

Nanotechnology patent applica- patents on genetic material. PCT applications in Denmark,

tions are further categorized into · l the United States had the

In 2004, Belgium and Canada to follow

six fields of application by the highest share of biotechnology with around 9%. The relative

OECD, e.g.“Electronics”, patents filed under the PCT weight of biotechnology in all

“Optoelectronics”, “Medicine and procedure (38.9%). Japan and international patent filings

biotechnology”, “Measurements Germany had 17.7% and 10.0%, decreased between the mid-1990s

and manufacturing”, “Environ- respectively (Figure and the early 2000s in most

ment and energy”, and “Nano 3.3.2).Australia, Belgium, countries.

materials”, based on the Interna- Canada, Denmark, India, Israel,

tional Patent Classification.

- Patenting activity in the area of

Biotechnology

· l

Applications for biotechnology

patents to the EPO grew by 5.8% a

year between 1995 and 2003

(Figure 3.3.1). However, the

number of biotechnology patents

started to decrease from 2000 (-6%

on average over 2000-03,





8

PATENTING OF MICRO- centres are called “International Deposi- geographical origin of the

ORGANISMS IN INDIA tory Authority (IDA)”. An IDA must biological material in the

store a deposited micro-organisms for at specification, when used in an

By Suresh Sukheja least 30 years from the date of original invention.”

For over 200 years living organisms had deposit. While applying for patents, an The Indian patents Act also list the

been excluded from patent laws; life applicant must deposit the micro- approved depository institutions under

forms were considered a “product of organisms not later than the date of patent the Budapest Treaty. In India, the

nature” and not a human invention. The application. approved Depository to Microbial Type

non-patentable status of living organ- Relevant Provisions under the Indian Culture Collection (MTCC),

isms changed with the landmark Patent Act Chandigarh.

decision of the Supreme Court, USA in

The sub-section 4d(ii) of the Section 10 Conclusion

Diamond vs. Chakraborty in 1980, when

of the Indian Patents Act, lays down the While the patents related to biotechnol-

a genetically modified bacterium was

conditions to be satisfied by an applica- ogy have attracted litigation in several

granted a patent. In India too, on

tion for patent of micro-organisms. It says countries abroad, the lawmakers in India

15.1.2002 the Kolkata High Court

–“If the applicant mentions a biological have exhibited sagacity by making such

granted a patent to Dimminaco A.G. for

material in the specifications, and if such elaborate provisions in the law that would

an invention involving micro-

material is not available to the public, the minimize litigation.

organisms, opening up new opportuni-

application shall be completed by

ties for obtaining patents in India on Also, given the maturity of the Indian

depositing the material to an international

micro-organisms related inventions legal system in interpretation of laws, one

depository under the Budapest Treaty and

which were earlier not granted. may conclude that they stage has been set

by fulfilling the conditions –

Biotech Revolution for India becoming a global hub for

a) The deposit of the material shall microbial and biotech research, thereby

The Indian Patents Act has laid down the be made not later than the date of attracting huge investments.

foundation for a revolution in the field of filing the patent application in

biotechnology and related fields by India and a reference thereof

providing for patenting of micro- shall be made in the specifica-

organisms. This provision has paved the tion within the prescribed

way for India to become a hub for period;

research in biotechnology, as the genetic

b) All the available characteristics

material of micro-organisms is con-

of the material required for it to

verted to any desirable form using

be correctly identified or

sophisticated techniques of genetic

indicated are included in the

engineering by the scientists and

specification including the

researchers.

name, address of the depository

The Budapest Treaty and India institutions and the date and

India is a signatory to the Budapest number of the deposit of the

Treaty, which deals with the subject of material at the institution;

deposition of micro-organisms with c) Access to the material is

institutions recognized as “depository available in the depository

institutions” for biological materials. institutions only after the date of

This Treaty is also known as the application for patent in India,

“Budapest Treaty on the International or if a priority is claimed, after

Recognition of deposit of Micro- the date of priority;

organisms for the purposes of Patent

d) Disclose the source and

Procedure.” The approved collection



9

TRADE MARKS punishment levied on Payless is now crept into the public consciousness)

exemplary. being used till no other person claimed

ADIDAS WINS $305 MIL- any ownership right to it.

OWNERSHIP OF 'SENSEX'

LION AGAINST PAYLESS By a news articles in December 2006 he

LANDS IN COURT

SHOESOURCE INC. FOR came to know that the BSE had applied

The word “Sensex” has now becomes the to the Trade Mark Registry in India for

TRADEMARK INFRINGE-

prestigious and cardinal issue between

MENT registration of the word “ Sensex” under

the Bombay Stock Exchange (BSE) and

the provisions of Trade Marks Act,

Veteran stock market analyst Mr. Deepak

Madhukar Mohoni. The word sensex 1999 (Act) in its favour.

which seems to be very much synony- Mr. Mohoni sent a notice to the Registrar

mous with the Bombay Stock Exchange of Trade Mark, Mumbai, calling on him

is giving Asia's oldest stock exchange to refuse the registration of the trade-

some anxious moments. mark in February 15, 2007. He filed two

A Payless shoe

Mr. Mohoni has staked his claim to the trademark applications for registration

term “sensex” and he also added that he of the “ Sensex” as a trademark in his

coined the term in November 1989 when name. The applications are pending

he started writing articles for Business

before the Trade Mark Office.

World (magazine).

On 26 March 2008, BSE's lawyer sent a

Few weeks ago, a suit was filed in Pune

notice to Mr. Mohoni, contenting that

district court where the lawyer of Mr.

trademark was adopted by BSE as far

Mohoni has put forward his contention to

An Adidas Superstar shoe back as 1986 to denote the BSE Sensitive

court, to recognize Mr. Mohoni as the

Index. This prompted Mr. Mohoni

In a landmark case the Federal jury in lawful and exclusive owner of the

decided to take legal step. In the suit filed

Portland has ordered Payless to pay trademark 'Sensex', and to order BSE to

few weeks ago, Mr. Mohoni's lawyer

$30.6 million in actual damages, $137 withdraw its own trademark application

contented that his client asserts no claim

million in punitive damages and $137 for the term 'Sensex'.

to the name Bombay Sensitive Index.

million includes for profits made on the The document which is submitted to the The said notice of the defendant (BSE)

infringing goods to Adidas America Inc. court says that in the course of his has mixed up the term “Bombay Stock

for willfully infringing on Adidas' writing, starting 1989, Mr. Mohoni Exchange” with the mark (Sensex).

famous three-stripe trademark. realized that the term 'Bombay Sensitive

The jury settled the case in favor of Index' was rather clumsy and long, and in

Adidas on many counts, including that context, summed it up succinctly

trademark infringement, trademark into 'Sensex', which he subsequently

dilution, injury to business reputation used in many of his articles, reports and

and unfair and deceptive trade practices. periodicals.



Payless was selling shoes with two-and Further this suit alleges that the BSE in

four-stripe designs that were very similar its official publication called 'BSE

to Adidas' well-known and trademarked Times' for many years even after 1995,

three-stripe design. The case also was not using the word “Sensex”, which

included Adidas' Superstar style. goes to prove that it never had any intent

to claim any right, title or claim in the

The case will act as deterrent against

said mark.

potential infringers to indulge in

activities of trade mark violation as the Mr. Mohoni very clearly said he had no

objection to the word 'Sensex' (which has



10

GEOGRAPHICAL unique lingering fragrance. Another — Pashmina, Sozni and Kani shawls

unique characteristic is that the volatile with the Indian GI Registry but that was

INDICATIONS opposed by the Rawalpindi Chamber of

oil (essential oil) content is compara-

MYSORE MALLIGE tively lower in this variety (Unique Commerce and Industries (RCCI) in

quality) The dry sandy soil prevailing in Pakistan by putting forward the conten-

REGISTERED AS GEO-

the region around Hadagali taluk is tion that the handicraft is also made in

GRAPHICAL INDICATION responsible for the particular aroma of Pakistan-occupied Kashmir (PoK).

Director of CDI, Srinagar mentioned that

they had applied for registration of

Geographical Indication for Kashmir

Pashmina, Kashmir Sozni embroidery

and Kashmir Kani shawl. But before they

could get the coveted titles, a Pakistan-

based business body filed objections

against India's application.



Director of the state handicrafts depart-

Geographical indications are indicators this flower, while the dry climate ment said the government might agree to

that identify a good as originating in the (low/sparse rainfall) adds to the favour- a joint GI registration if the Pakistani

territory of a Member, or a region or able environment for the crop. traders could establish that the PoK-

locality in that territory, where a given made products were of the same quality.

These flowers have a long shelf life and

quality, reputation or other characteristic can stay fresh for about three to four days According to the Telegraph newspaper,

of the good is essentially attributable to Kashmir has already lost the battle for

in the bud condition. The flower is in

its geographic origin. brand Cashmere, which was once used

high demand in places such as Mumbai,

A rose by any other name may smell just besides the coastal region. It has an exclusively for Kashmiri Pashmina. “The

as sweet. But the Bard's axiom sure does export potential as it is in demand in West brand Cashmere has become generic and

not apply to the “Mysore Mallige”. This Asia. is used extensively in the Western

variety of jasmine not only has countries.”

unmatched fragrance, but also an INDIA AND PAKISTAN

inextricable link with the royal city of BATTLE OVER GEO- China is producing the largest number of

Mysore. Cashmere wool and China sells most of

GRAPHICAL INDICATIONS

its wool under the name of Pashmina due

Karnataka has registered six GI crops (GI) REGSITRATION OF to which there is angst in Kashmir.

while the process for registering nine KASHMIRI HANDICRAFTS

other crops is underway. Mysore

Mallige, Udupi Mallige and Hadagali "The Cashmere Shawl: A garment

Mallige, Coorg orange, Mysore betel capable of appearing the most feminine

leaf (Piper betel), Nanjangud banana and graceful in the world."

have already been registered.

More than 60 years have passed since

Process is on to get GI registration for India and Pakistan fought over land,

Kamalapur Red Banana, Byadagi Chilli, cricket, nuclear testing and now are again

Sagar Apple, Midi Mango, Devanahali in the limelight on the region's handicraft

Pummelo, Mattu Gulla brinjal, – the 'Cashmere Shawl' of Jammu and

Bangalore Rose Onion, Bengalura Kashmir for GI Registration of which

Mango, Bangalore blue grape and attempts have been stopped by Pakistan.

Janagere jack fruit.

The Craft Development Institute (CDI)

The singularity of the 'Mysore Mallige' is at Srinagar had filed an application for GI

that it is a variety of jasmine with a Registration on three handicraft products

11

COPYRIGHT be located, a searcher may use a copy- procedures, said Emily Sheketoff,

righted work without the fear of hefty executive director of the American

US ORPHAN WORKS BILL copyright infringement damages. Library Association's (ALA) Washing-

CATCHES GLOBAL ATTEN- Independent and documentary filmmak- ton, DC office. The requirement will be

TION ers, libraries, archives, and museums all 'burdensome and potentially extremely

have collections of orphaned works that

An Orphaned Work is an originative costly' to libraries engaged in mass

they would like to transform into new

artwork where the artist or copyright digitization projects where millions of

works or display. The threat of copyright

owner has relinquished its copyright, titles are involved”.

infringement freezes them in their tracks

whether on purpose, by passage of time,

because they cannot find the owner to Holland, through Intellectual Property

or by lack of proper registration.

ask permission or license the work. Watch, pointed out that the proposals will

On 24 April'08, the Shawn Bentley disproportionately affect visual artists

These two statutes of US seek to check

Orphan Works Act of 2008 (S 2913) and because paintings, drawings and

that users make a meticulous search for

the Orphan Works Act of 2008 (HR 5889) photographs are often published without

copyright owners before using work

were enacted. Two orphan works bills contact information, credit lines can be

claimed to be orphaned, and pay them

easily removed by others and pictures

can be separated from the publications in

which they appear. And because visual

artists often produce many more works

than the most prolific author or song-

writer, it will cost them more time and

money to register and maintain tens of

thousands of registrations. He also stated

that the statute may produce a “gold mine

for opportunists” as for business, trade or

any profit making archives harvest

newly-created “orphans,” modify,

reshape, remodel, transform, transfigure

them somewhat to make “derivative

works,” and then register them as their

own “creative works”.









were introduced to help find owners and reasonable compensation if they surface,

encourage new and creative uses of unless the use is for scholarly, charitable,

unexploited copyrighted works. religious or educational purposes.

The concept behind orphan works is very According to Intellectual Property

simple: after a fruitless search or diligent Watch, 7th May 2008, “ users will be

search to find the true owner or when a charged a fee to register their searches in

copyright owner cannot be identified or order to fund the new administrative



12

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